India: Delhi High Court orders that ‘artistic works’ related to ‘design’ can only be protected under the Design Act,

August 1, 2016

The Single Judge Bench of the Delhi High Court, in the case of OK Play India Ltd. V. Mayank Aggarwal & Ors., has ruled in favor of Mayank Aggarwal and other Defendants by vacating the previous ex parte ad interim injunction granted to Ok Play India Ltd.

In the present case, the Hon’ble Court analyzed the relation between the Copyright Act and the Design Act, and ordered that the Artistic works which are related to Design can only be protected under the Designs Act and not under the Copyright Act.

Brief Background

The Plaintiff, OK Play India Ltd., is a leading manufacturer and distributor of quality products made using plastic moulding technology including toys, school furniture and playground equipment. The Plaintiff is also the registered proprietor of the trademark ‘OK PLAY’ since August 25, 2005.

The Plaintiff has sued eight Defendants namely Playwell Impex Private Limited, Mr. Mayank Aggarwal, Ms. Meenakshi Gupta, Mr. Pawan Kumar Gupta, Mr. Vishal Gupta, Mr. Darshan Singh Rawat, R.P. Associates and Funko India who are involved in manufacture and distribution of similar products. The Plaintiff claimed relief of permanent injunction to restrain the Defendants from infringing its copyright, common law rights in designs and passing off of deceptively similar products.

The ex parte ad interim injunction was granted to the Plaintiff vide order dated August 7, 2015 and the goods, of the Defendant, were seized by the Court Commissioner appointed vide the same order.

Contentions of the Plaintiff

  • That the products of Plaintiff are unique and conceptualized individually which involves studying the market, preparation of the drawings, coming up with a feasibility report, new color scheme, dimensions, etc.
  • That the Defendant Playwell Impex Private Limited is engaged in the business of manufacture, distribution and sale of toys in collusion with the other defendants including R.P. Associates who was earlier the distributor of Plaintiff’s products and Darshan Singh Rawat, who is an ex-employee of the Plaintiff. The Defendant Playwell Impex Private Limited has launched a range of toys which are identical and deceptively similar to the toys made by the Plaintiff and is thereby passing off its goods as those of the Plaintiff, infringing the bundle of intellectual property rights of the Plaintiff in its products.
  • That the toys manufactured and sold by the Defendants under the brand FUNKO are a substantial re-production and colorable imitation of the products of the Plaintiff.
  • There is a clear distinction between an original artistic work and a design derived from it for industrial application on a product. The original artistic work which may be used to industrially produce the designed article would fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act and would be entitled to copyright protection as defined under Section 2(d) of the Designs Act.
  • The Defendants in their written statement have admitted the e-mail of the Defendant Mr. Darshan Singh Rawat to the Defendant Playwell Impex Private Limited forwarding the brochure of the toys of the Plaintiff and therefrom it is evident that the Defendant Playwell Impex Private Limited is replicating from the brochure of the Plaintiff.

Contentions of the Defendant

  • That the drawing in which the Plaintiff claims a copyright does not constitute a design within the meaning of Section 2(d) of the Design Act and was thus, not capable of being registered under the Designs Act.
  • That the Plaintiff has no right to claim protection of design without any registration.
  • That the Plaintiff’s toys which are being manufactured since the year 1992, are not novel and similar products are available in the market for ages.
  • That no interim injunction should be granted at this stage when infringement is not proved.

Observation of the Court

  • That if a design is applied to an article and re-produced for more than 50 times by industrial process after making a drawing then the drawing cannot be treated disjunctively from the said design and the copyright cannot be vested in such drawing. Section 15(2) of the Copyright Act expressly ends the said protection.
  • That the Plaintiff’s products are manufactured more than 50 times by industrial process and their designs are registrable under the Designs Act. The protection of a design is for a maximum period of 15 years which has lapsed for the Plaintiff. No protection on the basis of copyright can be given to the Plaintiff at this stage.


The application of the Plaintiff for interim relief is dismissed. The applications of the Defendants for vacation of the ex parte order and return of its goods are allowed. The goods seized by the Court Commissioner/s be forthwith released to the Defendant Playwell Impex Private Limited.

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